Canada’s core IP statutes have been amended by Bill C-86, which received Royal Assent as the Budget Implementation Act, 2018, No. 2, SC 2018, c 27 on December 14, 2018. The final version of the legislation includes amendments to the Trade-marks Act that are substantially identical to the version that received first reading on October 29, 2018.

As we reported following first reading, the changes to the Trade-marks Act include:

  • Increasing procedural powers for oppositions and s. 45 proceedings including providing the Registrar with the power to award costs, issue confidentiality orders, and provide case management;
  • Introducing limits on the ability to file new evidence on appeal;
  • Introducing bad faith as a ground of both (i) invalidity and (ii) opposition;
  • Empowering the Registrar to remove official marks from the Register if they are owned by entities that no longer exist or are no longer public authorities; and
  • Introducing limits on enforcement without use in Canada.

Many of these changes are unlikely to take effect until related regulations are promulgated.

The omnibus budget Act also includes amendments to the Patent Act and the Copyright Act; provides for a new College of Patent Agents and Trade-mark Agents Act; and effects changes to diverse legislative schemes impacting the IP regime, including privacy and bankruptcy.

We will be reporting on regulations and guidance documents as drafts are released — stay tuned.

The author wishes to thank Chris Guerreiro for his help in preparing this legal update.